Basic Principles on Copyright
1. Q: As applied by Special Investigator Salcedo of the NBI, the RTC issued a search
warrant against Dadodette Enterprises and/or Hermes Sports Center for allegedly
possessing goods, the copyright of which belonged to Manly Sportswear Mfg., Inc.
Respondents thereafter moved to quash and annul the search warrant contending
that the same is invalid since the requisites for its issuance have not been complied
with.
The trial court granted the motion to quash and declared null and void based on
its finding that the copyrighted products of Manly do not appear to be original
creations and were being manufactured and distributed by different companies
locally and abroad under various brands. Moreover, there were certificates of
registration for the same sports articles which were issued earlier than MANLY’s,
thus further negating the claim that its copyrighted products were original
creations. Is the quashal of the search warrant proper on the ground that Manly’s goods
are not subject for protection under Section 172 of RA 8293.
A: Yes. The goods in question are unqualified for protection under Section 172 of
RA 8293.
It has been ruled that copyright certificates issued in favor of the registrant
constitute merely prima facie evidence of validity and ownership. However, no
presumption of validity is created where other evidence exist that may cast
doubt on the copyright validity.
In this case, there has already been an established doubt as to Manly’s goods
whether the same are original creations since these were being manufactured and
distributed by different companies locally and abroad under various brands and
there were certificates of registration already issued for the same sports articles
prior to Manly’s.
Hence, absence of presumption of validity on Manly’s copyright certificate, the
quashal of the search warrant is proper.
2. Q: Roberto U. Juan initiated the use of the name and mark “Lavandera Ko” for his
laundry business and subsequently opened a laundry store in Makati City in 1995.
Over time, the business expanded, leading to the formation of Laundromatic
Corporation in 1997, with “Lavandera Ko” being registered as a business name
with the DTI in 1998.
However, Roberto discovered that his brother, Fernando, had registered with the
same name and mark filed in 1995. Roberto learnt that Fernando had been selling
franchises using this name, prompting him to file a case for injunction, unfair
competition, and copyright infringement which then issued a writ of preliminary
injunction against Fernando. Following Roberto’s death, his son, Christian,
substituted him in the proceedings.
Eventually, the RTC dismissed the petition from both parties and ruled that
neither of them has the right use the trade name "Lavandera Ko" because the
copyright of "Lavandera Ko", a song composed in 1942 by Santiago S. Suarez
belongs to the latter. Is the RTC correct in dismissing the petitions on the ground that
“Lavandera Ko” is copyrightable?
A: No. “Lavandera Ko” is not copyrightable.
It has been ruled that the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic
domain protected from the moment of their creation. Trade name, on the other
hand, is any designation which (a) is adopted and used by a person to
denominate goods which he markets, or services which he renders, or business
which he conducts, or has come to be so used by other, and (b) through its
association with such goods, services or business, has acquired a special
significance as the name thereof, and (c) the use of which for the purpose stated
in (a) is prohibited neither by legislative enactment nor by otherwise defined
public policy.
"Lavandera Ko," the mark in question in this case, is being used as a trade name or
specifically, a service name since the business in which it pertains involves the
rendering of laundry services.
Hence, the RTC erred in dismissing the petitions on the ground that “Lavandera
Ko” is copyrightable.
Copyrightable Works
3. Q: Petitioner is asking for the cancellation of the registration of trademark
CHARLIE BROWN in the name of respondent MUNSINGWEAR, alleging that
petitioner is damaged by the registration of the trademark CHARLIE BROWN of
T - Shirts under Class in the name of Munsingwear Creation Manufacturing Co.,
Inc., on the following grounds:
a) CHARLIE BROWN is a character creation or a pictorial illustration, the
copyright to which is exclusively owned worldwide by the petitioner; and
b) that the respondent-registrant has no bona fide use of the trademark in
commerce in the Philippines prior to its application for registration.
Aside from its copyright registration, petitioner is also the owner of several
trademark registrations and application for the name and likeness of "CHARLIE
BROWN" which is the duly registered trademark.
Respondent, in its defense, claimed that it has no trademark significance and
therefore respondent registrant's use of "CHARLIE BROWN" & “DEVICE" is not
in conflict with petitioner's use of "CHARLIE BROWN". May “CHARLIE BROWN”
a copyrighted work owned by the petitioner be appropriated by the respondent as a
trademark?
A: No. A copyrighted work is entitled to protection P.D. No. 49.
Section 2 of Presidential Decree No. 49, otherwise known as the "Decree on
Intellectual Property", provides:
Section 2. The rights granted by this Decree shall, from the moment of creation,
subsist with respect to any of the following classes of works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps.
Therefore, since the name "CHARLIE BROWN" and its pictorial representation
were covered by a copyright registration way back in 1950 the same are entitled
to protection under PD No. 49.
Non-copyrightable Works
4. Q: BJ Productions, Inc. (“BJPI”), owned by Francisco G. Joaquin, Jr., had a
certificate of copyright for a dating game show called “Rhoda and Me,” which was
aired from 1970 to 1977.
Joaquin wrote to Zosa asserting BJPI’s copyright on “Rhoda and Me” and
demanded cessation of “It’s a Date.” Zosa apologized in writing and sought to
discuss a settlement. However, “It’s a Date” continued to air. Joaquin reiterated
his demand, threatening legal action if IXL didn’t comply.
IXL obtained a copyright for the first episode of “It’s a Date”. BJPI filed a
complaint, leading to the filing of an information for copyright violation against
Zosa and others connected with RPN Channel 9 asserting that the format of Rhoda
and Me is a product of ingenuity and skill and is thus entitled to copyright
protection. Is a mere format of a dating show a copyrightable work?
A: No. A dating show aired on TV is not a copyrightable work.
It has been ruled that the format of a show is not copyrightable. Since copyright
in published works is purely a statutory creation, copyright may be obtained
only for a work falling within the statutory enumeration or description.
Hence, the subject in question is not copyrightable.
5. Q: P D secured a Certificate of Copyright Registration for its illuminated display
units. It also applied for a trademark registration for "Poster Ads" covering
stationery such as letterheads, envelopes, and newsletters.
In 1985, P D negotiated with SMI for the lease and installation of light boxes in
SMI’s branches, but only the contract for SM Makati was signed. SMI later
rescinded the contract, citing nonperformance by P D. In 1988, Metro Industrial
Services (formerly P D’s contractor) began manufacturing light boxes for SMI. P D
discovered that SMI and NEMI were using light boxes similar to its designs in
several SM branches. Hence, P D filed a case for infringement of trademark and
copyright, unfair competition, and damages.
The RTC ruled in favor of P & D, finding SMI and NEMI liable for copyright and
trademark infringement, however, this was reversed by the CA ruling that the
light boxes were not copyrightable works under the law.
a) Are the lightboxes not copyrightable according to the CA’s ruling?
b) Assuming that these lightboxes are not copyrightable, may SMI be held liable for any
infringement?
A:
a) No. The CA is correct for reversing the decision of the RTC.
Copyright, in the strict sense of the term, is purely a statutory right. Being a
mere statutory grant, the rights are limited to what the statute confers. It may
be obtained and enjoyed only with respect to the subjects and by the
persons, and on terms and conditions specified in the statute. Accordingly, it
can cover only the works falling within the statutory enumeration or
description.
In this case, the lightboxes do not fall to any category provided by the law
which are copyrightable.
Hence, the lightboxes are not copyrightable.
b) Yes. SMI may be held liable for copyright infringement.
Section 2 of Presidential Decree No. 49, otherwise known as the "Decree on
Intellectual Property", provides:
Section 2. The rights granted by this Decree shall, from the moment of
creation, subsist with respect to any of the following classes of works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies, labels, tags and box
wraps.
Here, P & D secured its copyright under the classification class "O" work. This
being so, petitioner’s copyright protection extended only to the technical
drawings and not to the light box itself because the latter was not at all in the
category of "prints, pictorial illustrations, advertising copies, labels, tags and
box wraps."
Assuming that SMI copied P & D’s technical drawings, the former will be held
liable for copyright infringement.
6. Q: LEC was invited to submit designs for hatch doors and eventually
subcontracted for their manufacture and installation for certain floors by
Manansala Project, a high-end residential building in Rockwell Center, Makati
City.
Subsequently, Metrotech was reportedly subcontracted to install similar hatch
doors for other floors of the project, leading LEC to accuse Metrotech of copyright
infringement. May LEC sue Metrotech for copyright infringement?
A: No. There is no copyright infringement in this case.
A "useful article" defined as an article "having an intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey
information" is excluded from copyright eligibility.
Moreover, a hatch door, by its nature, is an object of utility. It is defined as a
small door, small gate or an opening that resembles a window equipped with
an escape for use in case of fire or emergency. It is thus by nature, functional
and utilitarian serving as egress access during emergency. It is not primarily an
artistic creation but rather an object of utility designed to have aesthetic appeal.
It is intrinsically a useful article, which, as a whole, is not eligible for copyright.
In this case, the subject allegedly copied by Metrotech is a hatch door.
Hence, as it is not eligible for copyright infringement, LEC cannot sue
Metrotech.
Rights of Copyright Owner
7. Q: The petitioners, comprised of various well-known motion picture companies
such as Columbia Pictures, Inc., Orion Pictures Corporation, and others, lodged a
formal complaint with the National Bureau of Investigation (NBI) alleging
copyright infringement against Sunshine Home Video, Inc., owned and operated
by Danilo A. Pelindario.
After covert surveillance, the NBI applied for a search warrant which the trial court
issued. The search warrant led to the seizure of various video tapes and equipment
from Sunshine Home Video.
However, upon motion for reconsideration filed by Sunshine Home Video, the
trial court ordered the quashal of the search warrant because the master tapes were
not presented during the proceedings for the issuance of the search warrant. Is the
presentation of master tapes during the proceedings necessary for a search warrant to be
issued in case of copyright infringement?
A: No. The trial court erred in quashing the search warrant.
The copyright for a work is acquired by an intellectual creator from the moment
of creation even in the absence of registration and deposit.
In this case, it is not the registration nor the deposit that confers a right to a
registered copyright owner.
Hence, the presentation of master tapes during the proceedings is not necessary
for a search warrant to be issued in case of copyright infringement.
Limitations on Copyright
8. Q: ABS-CBN’s Channels 2 and 23, along with several other channels, were initially
included in PMSI’s line-up of offerings to its subscribers without prior consent
from ABS-CBN. ABS-CBN demanded that PMSI cease rebroadcasting its channels.
PMSI claimed they were following NTC Memorandum’s must-carry provision to
broadcast television signals within certain contours. Can PMSI invoke its compliance
with the must-carry rule to deny copyright infringement?
A: Yes. PMSI cannot be held liable for copyright infringement.
Sec. 184. Limitations on Copyright. - Notwithstanding the provisions of Chapter
V, the following acts shall not constitute infringement of copyright:
xxxx
(h) The use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and is
compatible with fair use.
Accordingly, the “Must-Carry Rule” under NTC Circular No. 4-08-88 falls under
the foregoing category of limitations on copyright.
Moreover, it has been ruled that while the Rome Convention gives broadcasting
organizations the right to authorize or prohibit the rebroadcasting of its
broadcast, however, this protection does not extend to cable retransmission.
ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not
pass itself off as the origin or author of such programs.
Hence, PMSI can invoke its compliance with the must-carry rule to deny
copyright infringement.
9. Q: GMA Network, Inc., along with other broadcasters, filed a complaint with the
National Telecommunications Commission (NTC) against Central CATV, Inc.
praying Central CATV to stop soliciting and showing advertisements on its cable
television (CATV) system as it violates Section 2 of Executive Order (EO) No. 205.
Central CATV, in its defense, admitted to airing commercials but contended that
EO No. 436, issued by President Ramos in 1997, allows CATV operators to carry
advertisements with the consent of program providers. Is there a copyright
infringement on the part of Central CATV for airing commercials on its cable television
system?
A: No. The CATV operators are not prohibited from showing advertisements
under EO No. 205 and its implementing rules and regulations, MC 4-08-88.
Sec. 184. Limitations on Copyright. - Notwithstanding the provisions of Chapter
V, the following acts shall not constitute infringement of copyright:
xxxx
(h) The use made of a work by or under the direction or control of the
Government, by the National Library or by educational, scientific or
professional institutions where such use is in the public interest and is
compatible with fair use.
In this case, MC 4-08-88 mirrored the legislative intent of EO No. 205 and
acknowledged the importance of the CATV operations in the promotion of the
general welfare.
Hence, there is no copyright infringement.
Copyright Infringement
10. Q: Benjamin Tan (Defendant-Appellee) operates the “Alex Soda Fountain and
Restaurant” where professional singers and musicians perform live music.
The performances at Tan’s restaurant included playing and singing of the
compositions owned by the Filipino Society of Composers, Authors, and
Publishers, Inc. (FILSCAP) without a required license. The latter requested
payment of the necessary license fee from the appellee, which was ignored.
FILSCAP filed a complaint in the trial court alleging copyright infringement. The
defendant argued that merely playing songs didn’t constitute infringement under
the Copyright Law. Is the contention of defendant correct?
A: Yes. The defendant did not commit copyright infringement by mere playing of
the songs owned by the plaintiff.
It has been ruled that the Performance in a restaurant or hotel dining room, by
persons employed by the proprietor, of a copyrighted musical composition, for
the entertainment of patrons, without charge for admission to hear it, infringes
the exclusive right of the owner of the copyright.
In the present case, it is admitted that the patrons of the restaurant in question pay
only for the food and drinks and apparently not for listening to the music.
Hence, the contention of the defendant is correct.
11. Q: The petitioners, comprised of various well-known motion picture companies
such as Columbia Pictures, Inc., Orion Pictures Corporation, and others, lodged a
formal complaint with the National Bureau of Investigation (NBI) alleging
copyright infringement against Sunshine Home Video, Inc., owned and operated
by Danilo A. Pelindario.
After covert surveillance, the NBI applied for a search warrant which the trial court
issued. The search warrant led to the seizure of various video tapes and equipment
from Sunshine Home Video.
However, upon motion for reconsideration filed by Sunshine Home Video, the
trial court ordered the quashal of the search warrant because the master tapes were
not presented during the proceedings for the issuance of the search warrant. Is the
presentation of master tapes during the proceedings necessary for a search warrant to be
issued in case of copyright infringement?
A: No. The trial court erred in quashing the search warrant.
It has been ruled that, in copyright infringement cases involving videograms, the
necessity of presenting master tapes for establishing probable cause as decided
in the 20th Century Fox case should not apply to actions taken before the
promulgation of said doctrine.
The said doctrine was only promulgated in 1988 in the 20th Century Fox case while
the action was instituted later than the said promulgation.
Hence, the presentation of master tapes during the proceedings is not necessary
for a search warrant to be issued in case of copyright infringement.
12. Q: Petitioners are authors and copyright owners of educational books titled
“COLLEGE ENGLISH FOR TODAY” (CET), Books 1 and 2, and “WORKBOOK
FOR COLLEGE FRESHMAN ENGLISH”, Series 1. In their search for new
textbooks, they discovered “DEVELOPING ENGLISH PROFICIENCY” (DEP),
Books 1 and 2, authored by the respondents.
Upon comparison, petitioners found striking similarities and alleged instances of
plagiarism, leading to a demand for damages and cessation of DEP’s sale, which
was ignored by the respondents. A suit for “infringement and/or unfair
competition with damages” was filed against herein respondents. Are respondents
liable for copyright infringement for allegedly copying portions of petitioners’ educational
books?
A: Yes. There is copyright infringement committed by the acts of respondents.
When is there a substantial reproduction of a book? It does not necessarily
require that the entire copyrighted work, or even a large portion of it, be copied.
If so much is taken that the value of the original work is substantially
diminished, there is an infringement of copyright and to an injurious extent, the
work is appropriated. In cases of infringement, copying alone is not what is
prohibited. The copying must produce an "injurious effect".
Here, the injury consists in that respondent Robles lifted from petitioners' book
materials that were the result of the latter's research work and compilation and
misrepresented them as her own. She circulated the book DEP for commercial use
did not acknowledged petitioners as her source.
13. Q: Microsoft Corporation (Microsoft), through a Licensing Agreement, authorized
Beltron Computer Philippines Inc. (Beltron) to reproduce and install Microsoft
software, for a fee, while complying with certain provisions. However, later on,
Microsoft terminated the Agreement due to Beltron’s nonpayment of royalties.
Microsoft, through its agent, Pinkerton Consulting Services, discovered that
respondents, such as Beltron, were illegally reproducing and selling Microsoft
software post-Agreement termination. Microsoft obtained two search warrants
executed by the NBI, leading to the seizure of 2,831 CD-ROMs containing
Microsoft software, along with other computer hardware, from Beltron and
TMTC.
Microsoft filed a complaint with the DOJ accusing the respondents of copyright
infringement and unfair competition. The DOJ dismissed the complaint citing a
lack of merit, implying Microsoft’s actions were a civil dispute related to unpaid
royalties, not a criminal matter. Is DOJ’s dismissal of the complaint proper on the
ground that an action against copyright infringement is civil in nature?
A: No. A person who is guilty of copyright infringement is both civilly and
criminally liable.
The gravamen of copyright infringement is not merely the unauthorized
"manufacturing" of intellectual works but rather the unauthorized performance
of any of the rights exclusively granted to the copyright owner. Hence, any
person who performs any of such acts under without obtaining the copyright
owner’s prior consent renders himself civilly and criminally liable for copyright
infringement.
Multiple Performances
14. Q: FILSCAP filed a Complaint for Copyright Infringement against Icebergs and
Young after it discovered that the latter publicly played in its restaurants
copyrighted musical works found in FILSCAP's musical repertoire without the
required public performance license.
In its counterclaim, Icebergs denied committing copyright infringement, and
claimed that it was not engaged in "public performance" under Section 171.6 of the
IP Code, as it did not play a sound recording, but merely switched on a radio
transmitter, which, for Icebergs, connotes two different ideas. Is playing a radio
broadcast over a loudspeaker as background music in a restaurant constitutes public
performance, thus, amounts to copyright infringement?
A: Yes. Playing a radio broadcast over a loudspeaker as background music in a
restaurant amounts to copyright infringement.
Copyright infringement is committed by any person who shall use original
literary or artistic works, or derivative works, without the copyright owner's
consent in such a manner as to violate the latter's economic rights.
The playing of radio receptions of musical works through a loudspeaker
amounts to public performance. To this end, copyright protection is not
absolute. The IP Code provides the limitations on copyright, one of which is the
doctrine of fair use.
Fair use is a privilege to use the copyrighted material in a reasonable manner
without the consent of the copyright owner or as copying the theme or ideas
rather than their expression. Fair use is an exception to the copyright owner's
monopoly of the use of the work to avoid stifling "the very creativity which that
law is designed to foster."
In determining whether the use made of a work in any particular case is a fair
use the factors to be considered shall include:
a) The purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
b) The nature of the copyrighted work;
c) The amount and substantiality of the portion used in relation to the
copyrighted work; and
d) The effect of the use upon the potential market for or value of the copyrighted
work.
Where the profit generated by the alleged infringement is what the copyright
owner or original creator could have made, there can be no fair use. But where
the benefits are merely complementary or incidental, fair use may properly be
considered.
Based on the foregoing disquisitions, using copyrighted music via radio broadcast
played through loudspeakers, as background music in restaurants for the
entertainment of customers and for the enhancement of their dining experience,
falls outside the ambit of fair use, and thus amounts to copyright infringement.